Summary of the Agreements between IP Group plc and the University of Sheffield – overview and impacts

1. Purpose

This document is intended to provide a broad overview of the Agreements between the University of Sheffield and IP Group plc. It is primarily aimed at staff interested in the terms of the Agreements between the University and IP Group (IPG), relating to the commercial exploitation of University of Sheffield intellectual property (IP) and is not intended to be a comprehensive guide to the detailed operation of the agreement. If you require more information or have any queries about the Agreements please contact the Commercialisation Team.

2. Agreements

Two Agreements between University of Sheffield and IPG describe commercialisation of IP with ‘medical’ and ‘non-medical’ applications in different ways. This separation is for historic reasons but does not impact how ideas should be submitted to the commercialisation team.

The two Agreements enable IPG to work with the University to commercialise University IP but are not intended to prevent the University from undertaking research activity where the funder may require access to, or ownership of, IP arising from the funded work (e.g. collaborations, consultancy or contract research).

2.1 Non-Medical IP

The ‘Non-Medical Agreement’ gives IPG exclusive rights to commercialise University of Sheffield owned IP for non-medical applications through both licence opportunities and spin-out companies. This Agreement has been in place since August 2008 and has a 10 year term from the start of the arrangement. In return for these rights IPG have raised money for investment in the University´s IP and the University benefits from close relationships with IPGs business builders.

If IPG decline the right to commercialise some non-medical IP, their decision will first be discussed with the proposer(s) of the idea. A recommendation will then be made to the Commercial Assessment Review (CAR) Group, chaired by the PVC for Research and Innovation, that the project is not suitable for commercialisation via the IPG route.

If the proposer believes that the project should be maintained in the Commercial Assessment System (CAS) they should discuss the matter with the Director of Research and Innovation for their faculty and seek support for a request to CAR. The proposer should also submit a short case outlining the benefits and costs to the University of maintaining the project in CAS.

If CAR accepts the case for continuing the project is strong, CAR will decide how the project will be progressed. Any project continued in this way will be outside of the Agreement as IPG has formally declined the opportunity to commercialise the IP.

If a project is not to be maintained in CAS and the proposer wishes to have access to University intellectual property which may subsist in the project then this can be raised with a member of the Commercialisation of IP Team.

2.2 Medical IP

The ‘Medical Agreement’, having a 10 year term from May 2015 maintains IPG as the University’s preferred partner for commercialising Medical IP into high value spin out companies only. The University fosters all other opportunities for exploitation through other methods.

2.3 Summary Table for Commercialisation of University owned IP

Agreementab

* Includes: Knowledge based spin-outs; licensing opportunities; social enterprises; University service opportunities and IP excluded/removed from the IPG agreement by UoS/IPG/inventors.


3. Submission of Commercial Opportunities

The following table details four projects that a member of staff could be supervising.

Fusion agreement

The University has options to exploit the IP from Project A, the IP owned by Sheffield from Project C and the IP arising from Project D assuming the funder gives permission for the University to act. The University has no rights to the IP arising from Project B or the IP owned by University Z arising from Project C.

Staff should submit projects with potential commercial value into the Commercial Assessment System (CAS) using an Initial Commercial Enquiry (ICE) form. All projects containing IP owned by the University will be disclosed to IPG at regular Commercial Assessment Review (CAR) meetings. Inventors, in collaboration with the commercialisation managers, will then develop the commercial readiness of the ICE with the aim of converting it into a Commercial Opportunity Disclosure (COD).

The CAR group is then responsible for the categorisation of CODs so as to identify those suitable to be progressed by the IP Group model, and for assessing the other opportunities for exploitation using the UoS in-house system.

4. Further information

  • The University, IPG or the inventor may elect to exclude any medical disclosure from the IPG pipeline. The university may then develop the IP as appropriate.
  • IPG have 9-months in which to assess an idea nominated to become an IPG spin-out opportunity before the opportunity is either taken forward for funding or returned to UoS for further consideration.
  • Information on licence and share revenue is detailed on a dedicated page
  • The Agreements contain confidentiality provisions so any University IP disclosed to IPG personnel is fully protected. University members should not disclose any information relating to their idea, or information they receive from IPG, without written permission.